Appeal No. 93-2460
Application No. 07/590,647
art. In re Bowen, 492 F.2d 859, 861, 181 USPQ 48, 50 (CCPA
1974). Here, we find that the specification teaches those
skilled in the art how to make the claimed codon substitutions
within the EPSPS DNA sequence by site-directed mutagenesis.
Specification, pp. 51-54. Moreover, as pointed out by the
appellants, the specification (Figure 1) also provides teachings
as to the types of plant and bacterial species contemplated by
their invention. Brief, p. 19. These points are not refuted by
the examiner; rather, she alleges that additional DNA sequences
are within the scope of the claim and if those skilled in the art
wanted to make the claimed codon substitutions using DNA
sequences which do not have the consensus sequence set forth in
Figure 1, s/he could not do so following the techniques described
in the specification. The examiner's analysis is improper. As
held by the court in In re Borkowski, 422 F.2d 904, 909, 164 USPQ
642, 645 (CCPA 1970), it is inappropriate "to study appellants'
disclosure, to formulate a conclusion as to what he (the
examiner) regards as the broadest invention supported by the
disclosure, and then to determine whether appellants' claims are
broader than the examiner's conception of what 'the invention'
is." Therefore, in the case before us since the techniques
disclosed in the specification only employ DNA sequences which
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